If they could TiVo legal action, it was the kind of year that partners at Irell & Manella might have wanted to record.
The firm, in 2011, scored a series of key victories in major patent disputes involving TiVo Inc., maker of the famed digital video recorder. In April 2011, just nine days after an en banc panel of the U.S. Court of Appeals for the Federal Circuit handed down a victory for TiVo, competitor EchoStar Corp. settled a seven-year patent dispute with the DVR maker for $500 million.
TiVo’s attorneys at Irell & Manella resolved the litigation after the en banc panel affirmed a $90 million sanction, concluding that EchoStar was in contempt of a previous permanent injunction order.
Then, on Jan. 3, 2012, just six days before trial, Irell settled another case for $215 million on behalf of TiVo against AT&T over the same patent.
Andrei Iancu, managing partner of Irell, who worked on both cases, said the firm has two other cases pending on behalf of TiVo: one against Motorola Mobility Inc. and Time Warner Cable Inc., and another against Verizon Communications Inc., scheduled for trial later this year.
“This is, we believe, the fundamental patent in the DVR space,” said Iancu. “TiVo is a pioneer in the DVR space.”
Another Irell victory last year was a verdict for St. Jude Medical Inc. in a dispute with competitor AccessClosure Inc. over a device used to close holes in arteries. A federal judge in Arkansas ruled on Nov. 8 for St. Jude on an outstanding issue raised after a jury awarded $27.1 million against AccessClosure. Final judgment was entered on Jan. 23, 2012; both sides have filed post-trial motions.
The firm also represented Research in Motion Ltd., maker of the BlackBerry, as part of a joint venture of five companies including Microsoft and Apple that paid $4.5 billion for a portfolio of 6,000 patents from bankrupt Nortel Networks Corp. Irell also represented Amazon.com in its objection to a proposed settlement in the copyright case against Google Inc. over a planned digital library. A federal judge rejected the deal last year.
Not all the cases went well. Irell lost a Dec. 20 ruling by the Ninth Circuit in a copyright infringement case brought by Universal Music Group against video-sharing Web site Veoh Networks Inc. Irell has petitioned for rehearing after losing arguments that Veoh could not assert the “safe harbor” provisions of the Digital Millennium Copyright Act.
— Amanda Bronstad